Mr Zuccarini, sometimes known as Cupcake Patrol and other “colourful” noms de plume, may be familiar to those of you around in the “old” days of the UDRP from the frequency in which he appeared as a respondent.

Venkat, in a guest post on Professor Goldman’s Technology and Marketing blog, highlights, the Ninth Circuit’s ruling permitted execution on the basis of the location of the domain name registrar. So, if your client has registered his/her/its domain name through a US registrar, the domain name could be at risk if your client becomes embroiled in a dispute with someone who has access to the US legal system.

• iiNet
• Larrikin (Down Under)
• Telstra v PDC

Speakers are:

There are 347 paragraphs and time does not permit careful analysis at this stage. According to the summary in [5]:

It may be particularly interesting to see why copyright did not subsist in the Yellow Pages directories, which were classified directories.

At [46], her Honour explained why Desktop Marketing no longer represented the law in Australia following IceTV (here and here):

Before turning to the facts, mention must be made of the decision of the Full Court of the Federal Court in Desktop Marketing Systems Pty Ltd v Telstra Corporation Ltd [2002] FCAFC 112; (2002) 119 FCR 491 (Desktop Marketing). In that decision, copyright was found to subsist in certain editions of WPDs and YPDs. The Applicants submitted that the resolution of the present case remains governed by the outcome in Desktop Marketing [2002] FCAFC 112; 119 FCR 491 and that the High Court’s comments on copyright subsistence in IceTV [2009] HCA 14; 254 ALR 386 should be regarded as obiter dicta. I reject that contention. Firstly, IceTV [2009] HCA 14; 254 ALR 386 is binding authority on the proper interpretation of the Copyright Act. The reasoning of both plurality judgments establishes principles of law beyond copyright infringement. Secondly, the High Court directly warned of the need to treat Desktop Marketing 119 FCR 491 with particular care: see IceTV [2009] HCA 14; 254 ALR 386 at [52], [134], [157] and [188]. Thirdly, Desktop Marketing [2002] FCAFC 112; 119 FCR 491 did not deal directly with the issue of authorship. Rather, all issues in respect of copyright had been conceded other than that of originality. In fact, Finkelstein J (at first instance) questioned the assumptions the parties had made about authorship: Telstra Corporation Ltd v Desktop Marketing Systems Pty Ltd [2001] FCA 612; (2001) 51 IPR 257 at [4]. Finally, the facts of this case are significantly different. The WPDs and YPDs in question are different. Moreover, the Genesis Computer System which stored the relational database and which was used in the production of some of the WPDs and YPDs in issue in these proceedings (after September 2001 in the case of YPDs and late 2003 in the case of WPDs) was not in use in Desktop Marketing [2002] FCAFC 112; 119 FCR 491. (The Genesis Computer System is considered in detail at [60]ff below).

Telstra Corporation Limited v Phone Directories Company Pty Ltd [2010] FCA 44

According to IP Australia

The pilot has made a successful start, following its launch in December 2009. The community of reviewers has identified 27 prior art references and contributed 57 comments in the first eight weeks of operation.

A second round of applications will be posted on the website at the conclusion of the first phase and IP Australia is now calling for nominations for potential candidates for review.

For more details and to register as a commenter, click here.

Justice Keane is currently a Justice of Appeal in Queensland and will become the third Chief Justice.

Announcement here.

Lid dip: Peter Clarke

1. the sale of the Baccarat Venice coffee plunger and Euroline’s Classic coffee plunger passed off Bodum’s Chambord coffee plunger or was otherwise misleading or deceptive; or
2. Baccarat’s Devon teapot passed off Bodum’s Assam Tea Press or was otherwise misleading or deceptive.

Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23

The judgment includes depictions of the products and their packaging in the appendices.

It would seem (from newspaper reports) that 2 bars were a substantial part – shades of the old Colonel Bogey newsreel case.

The video on the Age’s website has the clips of every kid’s favourite folk song and that flute riff.

Richard Acland highlights the crucial comparison in a vacuum:

Even though there was evidence that the pitch, key, rhythm, melodic shape, harmony, musical sentences and context are different, Justice Jacobson found that there was nonetheless a reproduction of a substantial part of Kookaburra in Down Under. This is not to say that Kookaburra amounted to a substantial part of the pop song.

but it all seems rather academic when Jacobson J found at [111]:

Mr Hay also accepted that for a period of about two or three years from around 2002, when he performed Down Under at concerts, he sometimes sang the words of Kookaburra at about the middle of Down Under, at the point at which he reached the flute line.

Looks rather like the crucial battle was last year’s fight over whether or not the Girl Guides or Larrikin owned the copyright in the first place.

Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29

Roadshow Films Pty Ltd v iiNet Limited (No. 3) [2010] FCA 24 (636 para judgment) here.

Since I will find myself still locked in aforesaid conference room, I’ll simply quote (at this stage) from the 21 para summary:

Howard Knopf and Michael Geist look at the decision from Canadian perspectives.

The report is here (pdf) – be warned 138pp, Exec Summary is 10pp.

Some recommendations:

Recommendation 1.

A new “purchase” right be added to s.11. This new right would only apply to those taxa that are specifically declared in the regulations. Industry sectors such as wheat breeders would apply to the PBR Office to have particular taxa so declared.

Recommendation 2.

The PBR Act be amended to clarify that harvested material that is also propagating material is to be considered as propagating material for the purposes of s.11, even if it is not being used for that purpose.

Recommendation 4.

There be no change to the operation of farmer’s privilege under s.17.

However, s.17 should be amended to state in easily understood terms that s.17 does not provide the farmer with the right to perform the acts listed in s.11(a) to (g). For example, the farmer will still require the PBR owner’s authorisation to sell the reproduced propagating material, the harvested material or the product of the harvested material.

Recommendation 5.

As part of IP Australia’s education and awareness programs, raise industry awareness of the opportunity under s.17(2) to have specific taxa excluded from the farmer’s privilege exemption.

Recommendation 6.

Encourage PBR owners to make clear to growers the conditions of sale of propagating material and their obligations in relation to future generations of it. This includes making clear that growers require the authorisation of the PBR owner to sell crops grown from farm-saved seed.

Recommendation 14.

The jurisdiction of the second tier of the Federal Court of Australia to include PBR matters.

Appropriately qualified magistrates must be made available and there should be appropriate measures taken to ensure the processes of the second tier are faster and cheaper than in the first tier. Examples include simplifying and standardising procedures for expert evidence and DNA testing through the issuing practice notes, use of alternate dispute resolution where appropriate, and curtailing of the discovery phase.

Recommendation 12.

An on-going Expert Panel be established to provide guidance and opinions on general issues or specific cases concerning the PBR Act and related law. The Panel should comprise appropriate people with expertise in relevant areas who provide their services as required.

Upon request from any person and for a moderate fee, the Panel may provide detailed guidance and opinions on general issues or specific cases concerning the PBR Act and related law. The Panel should focus on the enforcement of granted rights and not provide advice on the registrability of individual applications for PBR. The Panel’s opinions should be made publicly available in a manner that respects commercially sensitive material. The Panel may refer matters to the Government or ACIP as it sees fit.

Her topic: “not Seeing the Wood for the Trees: Is the Patent System still fit for purpose?”

Details and registrations via here.

In the meantime

Wishing you all the Compliments of the Season!

and a happy, healthy and safe 2010.

The interesting point is that the proceedings for infringement were not brought within the “action period” specified in by s 137 of the Trade Marks Act. Greenwood J reasoned:

Section 136 is headed “Release of Goods to Owner – No Action for Infringement and s 137 is headed “Action for Infringement of Trade Mark”. Some discussion has arisen in earlier authorities, including Jemella v Mackinnon & Another [2008] FCA 1022; 77 IPR 243, in which Logan J had to consider whether non-compliance with these provisions as to commencement and notification within the extension period, might have the effect of depriving the applicant of its standing to maintain infringement proceedings. I am satisfied that ss 136 and 137, taken together, do not deprive the applicant of its standing to maintain proceedings for infringement of the trade mark. Section 137 is not a primary empowering provision conferring rights of action in the applicant. It is permissive in the context in which it appears. Those rights are conferred by s 20 and the provisions of Part 12 of the Trade Marks Act. Section 137 recognises that a trade mark owner may elect to bring proceedings and ss 136 and 137 address what is to occur in the circumstances of those sections in respect of seized goods if the relevant steps are not taken. However, the provisions should be read subject to an order that might be made under s 137(5) to, in effect, preserve the status quo in circumstances where the Court is satisfied that there is a prima facie case of infringement. Nevertheless, a question arises as to whether it is appropriate to make an order directed to the Customs CEO preventing the goods from being released, in all the circumstances, in the exercise of discretion, when s 136 imposes a statutory obligation upon the Customs CEO to release the goods in the circumstances there identified and s 137 imposes time constraints. That directs attention to the merits.

That is, the foundation of the right to be protected by the interlocutory injunction was the right to sue for infringement of the registered trade mark – a right conferred by ss 20 and 120; s 137 merely facilitated that primary right.

Jemella Australia Pty Ltd v Bouobeid [2009] FCA 1567

Jemella Australia Pty Ltd v Daizli [2009] FCA 1566

In the Daizli action there is a further complication that the respondents seem to be out of the jurisdiction for some time. His Honour also refers to products being offered for sale on eBay. But, other than those products being alleged to be infringing, I’m not sure what particular significance that has.

• Flexible Search and Examination
• Streamlining the Patent Process

As with the first round of the second round, comments are required by 12 Feb 2010.

The new paper and drafting instructions can be found here (pdf).

Links to all the papers, pdf and word, via here.

Special feature: Top 10 clinical trial mistakes

by James Cameron of McCullough Robertson.

Lid dip: Kim O’Connell at Mallesons.

Images of the product Mars complained about here.

The Full Court noted:

9     It is not in dispute that the evidence established that:
•    confectionary is commonly packaged in primary colours and that red, in various shades, is a predominant and common, indeed ubiquitous, colour;
•    confectionary packaging commonly displays a picture or representation of the product, frequently showing a cross-section or “cut through” of the product;
•    it is not unusual for the name of the product to be written on a diagonal, from bottom left to top right;
•    it is common for packaging of confectionary to include all of the above features.

In this context, the Full Court found that the words malt balls were descriptive and the colour red used by the respondent was not distinctive.

Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174

The bottles themselves were packaged in cardboard boxes which did not have “BSS” on them and the products were distributed to hospitals and the like.

Alcon, however, has BSS registered as a trade mark in class 5 for such products.

One point of interest is that Bausch & Lomb sought to show that BSS had become descriptive in the trade by relying on a range of publications which included expressions such as “balanced salt solution (BSS Alcon)”, with subsequent references being just to BSS.

Most of the publications were dismissed as inadmissible, being foreign publications not shown to be directed at Australia or referred to by Australians. On the other hand, those in Australia that were admitted:

98 A fair reading of those journal articles suggests that, when used in those articles, the letters “BSS” were almost always being used by the authors as an editorial abbreviation for “balanced salt solution”. This does not prove lack of distinctiveness. The letters “BSS” never appear on their own in those journal articles without a prior reference to “balanced salt solution”. The contents of the journal articles are, at best, neutral on the question of whether the letters “BSS” were used descriptively by December 2006. If anything, they tend to suggest that those letters were not used in that way at that time. This is because, in every case, it was necessary to refer to the product by its full name (“balanced salt solution”) before the acronym “bss” could sensibly be deployed. The one example of use of the letters “BSS” in government Request for Tender documents is in the same category.

The evidence further showed that until Bausch & Lomb came along, all Alcon’s other competitors used “balanced salt solution” but not BSS. Bausch & Lomb’s conduct, the subject of the proceeding, was the sole exception.

A second, more general, issue is whether or not Bausch & Lomb is using BSS as a trade mark. Foster J found it was. Over at the Australian Trade Marks blog, Professor Davison accepts that there was considerable grounds to find that it was use as a trade mark. However, he contends that one of the factors, (h), relied on by the judge goes to far:

(h) The letters “BSS” have brand significance in the relevant trade in Australia. They are known to be the applicant’s trade mark. The applicant has a reputation in the product identified by reference to the mark (Alcon BSS).

I am not sure that the criticism is well made.

For example, in the Caplets case, Gummow J explained the test for determining use of a trade mark as follows:

When the issue is one of infringement, a pivotal question is whether the use complained of is use by the alleged infringer as a trade mark. The answer to that question requires an understanding of the “purpose and nature” of the impugned use: Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 426(the Shell case) per Kitto J. As his Honour there points out, with reference to Edward Young & Co Ltd v Grierson Oldham & Co Ltd (1924) 41 RPC 548, and as s 66 of the present Act also indicates, the nature of the allegedly infringing use may be considered in the light of a usage common in the relevant trade. The relevant context, where the mark is a word mark, includes a consideration of the way in which the word has been displayed in relation to the goods and advertisements of which complaint is made: Mars GB Ltd v Cadbury Ltd [1987] RPC 387 at 402, per Whitford J.

Where the trade mark allegedly used by the defendant comprises ordinary English words (such as “Page Three”, considered by Slade J in News Group Newspapers Ltd v Rocket Record Co Ltd [1981] FSR 89 at 102) then, as this decision illustrates, that circumstance may be taken into account by the court in the process of reasoning by which it accepts or rejects a submission that the use in question is not a trade mark use but a description of the goods in question. To say that is not to gainsay the point made by Dixon CJ in Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 194–5 (the Tub Happy case), that language is not always used to convey a single, clear idea; a mark may have a descriptive element but still serve as a badge of trade origin. However, where the issue is one of infringing use by use of a word mark (as in the present case), the fundamental question remains, to paraphrase what was said by Williams J in the same case (at 205), whether those to whom the user is directed are being invited to purchase the goods (or services) of the defendants which are to be distinguished from the goods of other traders “ partly because “ (emphasis supplied) they are described by the words in question. (my emphasis)

Now, that doesn’t say that you can take into account consumers’ knowledge that the term is a trade mark. However, if you can take into account their knowledge that something, such as the ox cart in Edward Young v Grierson Oldham, is commonly used descriptively, wouldn’t their knowledge that something was a trade mark be relevant also? The fact that ‘Alligator’ was a fancy word used only by the plaintiff was a vital consideration in JB Stone & Co Ltd v Steelace Manufacturing Co Ltd (1929) 46 RPC 406, a case which Kitto J did read narrowly.

Alcon Inc v Bausch & Lomb (Australia) Pty Ltd [2009] FCA 1299

According to Ben:

Following on from the Peer-to-Patent projects run recently out of the New York Law School (NYLS) and the JPO comes Peer-to-Patent Australia. Peer-to-Patent Australia is a joint initiative of the Queensland University of Technology (QUT) and IP Australia that is designed to improve the patent examination process and the quality of issued patents. Peer-to-Patent Australia uses Web 2.0 technology to allow experts within the community to review participating patent applications and bring relevant prior art to the attention of IP Australia’s patent examiners.

The project is based on the successful Peer-to-Patent projects run out of the New York Law School (NYLS) in the United States and is the result of the collaborative efforts between QUT and NYLS. The project will initially run as a six-month pilot that will focus on the rapidly advancing technology areas of business methods and computer software. Up to 40 business method, computer software and related patent applications that have been filed in Australia and which are open for public inspection will each be posted on the Peer-to-Patent Australia website for a 90-day period. During that time, members of community can review those applications, submit prior art references and comment on the relevance of any prior art that has been put forward.

At the end of the review period, Peer-to-Patent Australia will forward the top 10 prior art submissions for each application, as selected by the community of reviewers, to IP Australia for consideration in the examination process. The review process in no way abrogates the responsibility of the patent examiner to assess a patent application. Prior art submitted by Peer-to-Patent Australia is solely designed to assist a patent examiner, who remains the arbiter of whether a patent is to be granted.

There are currently 15 patent applications from seven companies open for review. The participating companies include IBM, Aristocrat Technologies Australia Pty Limited, General Electric Company, Hewlett-Packard, Residex Pty Ltd, Yahoo and CSIRO.

Since the focus of the pilot is on business methods and related applications, there is an interesting array of new ideas and technologies in the applications that are open for review. Those applications include methods, systems and apparatus for:

• converting a decimal number to a binary representation based on processor size;
• detecting behavioural patterns related to the financial health of a business entity;
• an arrangement where a customer enters into an agreement with a lender to share equity in real estate property;
• efficient cooling of server farms;
• refining mobile device search results using location modifiers;
• integrating browsing histories with media playlists on a media playback device;
• interactive specification of context-sensitive service level agreements;
• controlling a network of trains; and
• gaming machine systems and methods.

Those wishing to review participating patent applications can read more and register here.

x

The first point of interest is the impact of a statement of novelty. A second point of interest is the impact of trade variants or “features commonly used in the trade”. Thirdly, his Honour ruled on the costs to be taken into account in the course of an account of profits.

This was the representation in the design (ADR 127723)

There was the usual statement of monopoly, limiting the design to the features of shape or configuration.

Unusually, there was also a statement of novelty:

Novelty is claimed in the shape and configuration of the upper layer of the mattress portion of the mattress and base as indicated by the beading as shown in the representations.

Chiropedic (the design owner) contended that novelty or originality of its design was not limited by this statement and, even if it were, validity and infringement still fell to be assessed by consideration of the design as a whole citing, in support, the judgment of Davies and Whitlam JJ in Richsell v Khoury at [7].

Jessup J reviewed the cases referred to in Richsell, but discovered that they did not actually deal with it. His Honour found considerably greater assistance in the Franki Report which had led to the introduction of the concept:

On the other hand we were of the opinion that the Registrar should be given power to require a ‘statement of novelty’ to be lodged. By ‘statement of novelty’ we mean a statement dealing with the features of a design that may be said to provide the basis for the design being new or original. For example, if in a design for a chair the significant feature is in the shape of the two front legs and attention is drawn to this fact in a statement of novelty, while there would be no infringement of the design unless the infringing article satisfied the tests for infringement of the chair as a whole, nevertheless it is reasonable to assume that, in testing the novelty and originality of the design, attention would be directed to the two front legs and that this feature of the design would be given particular weight in testing infringement, although an infringement could not be proved unless the relevant tests were satisfied in respect of the whole chair. (my emphasis)

and Slade LJ’s consideration in Sommer Allibert of the similar concept in the UK legislation (the latter of which had not been referred to in Richsell or Polyaire). Accordingly, Jessup J held:

[22] …. The argument which Davies and Whitlam JJ rejected in that case was that, in making the comparison required by s 17(1), one should look only at the features for which novelty had been claimed. It is one thing to say that the registered owner should not be permitted to use his or her own statement of novelty for the purpose of shutting the court’s eyes to the appearance of a complete design, and to do so to his or her own advantage. It is another thing altogether to say that the registered owner should not be held to such a statement of novelty when the court comes to consider what aspects of the registered design are new or original. The court’s eyes would then be open to the complete design, of course, but it should, in my view, assess that design against the prior art with a particular emphasis upon those features that the registered owner himself or herself, at the point of registration, considered to be novel.

Paying particular attention to the features identified in the Statement of Novelty, his Honour went on to find the design valid over the prior art. For example, it had a relatively square look where the horizontal surface met the upper line of beading, while the prior art was relatively curved. Similarly, the proportion of the upper layer to the lower lower of the mattress was significant over the prior art.

These findings had particular significance when it came to considering infringement. One of Radburg’s designs was found to be identical to the registered design. A second was an obvious imitation. A number of others, however, escaped liability as they either had similar convex curvature to the prior art rather than the square look of the registered design or the upper layer of the mattress was a significantly smaller proportion of the mattress; many of them also had quite different ribbing.

One striking visual difference was discounted in the comparisons: the mattresses in some of the prior art had three layers, not two; so that the mattress could be flipped over and used. The evidence established, however, that the omission or inclusion of the bottom or third layer was a variant commonly resorted to in the trade. Another feature, an “inward set” was apparently visible to those in the trade on fastidious inspection, but his Honour found it did not strike the eye and was an immaterial variation.

Finally, on the principles to be applied in the account, Jessup J ruled that the respondent’s bills of materials should be used (where available) on the principle that they reflected as closely as possible the actual costs incurred and so, where the evidence showed that margins earned on different product lines were not uniform, the respondent would not generate a windfall profit.

Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163

So far as I can see, no application for leave to appeal has been filed.

An essential feature of the patent was that the simulated flames resulted from reflected light, however, the alleged infringements used directly projected light, not reflected light and consequently did not infringe.

The novelty attack failed because the relevant prior art did not possess all the features claimed. The attack on obviousness failed because s 7(3) was not available – the complete specification was filed before the 1990 Act came into force and so the Alphapharm rules were all that was relevant.

Of potentially greater interest, if there had been infringement, Foster J would have found the importer and retailer (Bunnings) were engaged in a common design.

Somewhat bizarrely, on of the respondents denied it had imported the allegedly infringing products, but led no evidence on the point. As a result, Foster J has foreshadowed some consequences in costs for putting the applicant to proof on this point.

Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393

Topics covered include:

• Getting the Balance Right
  Exemptions to Patent Infringement
  Resolving patent opposition proceedings faster
  Resolving trade mark opposition proceedings faster
  Resolving divisional applications faster
• Getting the Balance Right
• Exemptions to Patent Infringement
• Resolving patent opposition proceedings faster
• Resolving trade mark opposition proceedings faster
• Resolving divisional applications faster

Submissions are due by 12 February 2010.

In a move definitely to be encouraged, the proposed drafting instructions have also been published (pdf) for comment.

(Links to the “Word” version as well as the pdf version and the previous round of consultation papers via here.)

Some further papers will be published soon on:

• Flexible Search and Examination
• Streamlining the Patent Process